Appeal No. 2005-2121 Page 7
Application No. 09/745,605
and other related naturally occurring genomic sequences” (Specification, page 46), as
well as “to access and elaborate [its own] functions” (id.). Therefore, those potential
uses are not specific to the claimed polynucleotides and do not satisfy the requirements
of § 101.
We conclude that the specification does not does not disclose a specific and/or
substantial utility for the claimed polynucleotides. Accordingly, we affirm the rejection of
claims 1-5 and 53-65 under 35 U.S.C. §101.
Enablement
Claims 1-5 and 53-65 also stand rejected under 35 U.S.C. §112, first paragraph,
as “the claimed invention is not supported by either a specific or substantial asserted
utility or a well established utility . . . [and therefore], one skilled in the art would not know
how to use the claimed invention” (Answer, page 6). To the extent that this enablement
rejection is a corollary of the examiner’s finding of lack of utility, we agree.
Accordingly, the rejection of claims 1-5 and 53-65 as lacking enablement under the
first paragraph of 35 U.S.C. §112 is affirmed.
SUMMARY
The specification does not disclose a specific and substantial utility for the
claimed polynucleotides. We therefore affirm the rejections of claims 1-5 and 53-65
under 35 U.S.C. §§ 101 and 112, first paragraph. Our affirmance of these rejections
constitutes a disposition of all the claims on appeal. Accordingly, we do not reach the
remaining rejections for indefiniteness, anticipation and lack of written descriptive
support.
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